The UPTO has announced a preliminary plan for the retrospective analysis of USPTO regulations it will undertake pursuant to Executive Order 13563 ("Improving Regulation and Regulatory Review"). The July 7, 2011 Federal Register Notice primarily refers to information on the Department of Commerce website, but includes an open invitation for public comments and suggestions.

The Proposed Process

According to the Preliminary Plan, the USPTO's Office of General Counsel will implement and maintain the "look back" plan, at the direction of the Deputy General Counsel and Solicitor. The Preliminary Plan indicates that additional training will be provided for involved personnel, including "additional training concerning rulemaking" and "substantive areas of law related to the USPTO's significant regulations, such as patent and trademark law."

The USPTO intends to conduct the review "over the next two years or more."

(I wonder what will happen to this plan if Patent Reform is enacted and the USPTO has to write a whole new set of rules?)

Based on the results of its review, the USPTO will determine if rules "warrant modification, expansion, streamlining or repeal . . . and how that can be accomplished."

As set forth in the Preliminary Plan, although the Office of General Counsel will drive the review process, "the ultimate determination of how to revise significant regulations based on this analysis will be made in consultation with the relevant business units at USPTO responsible for drafting the significant regulation in question." The USPTO also will "coordinate with other Federal agencies that have jurisdictions or similar interests that relate to USPTO’s significant regulations, such as consulting with the Small Business Administration concerning the impact of rules on small businesses.  The USPTO also will continue to solicit public comment.

The USPTO will maintain a webpage ("Look Back Plan: Plan for Retrospective Analysis of Existing Regulations") with information about the plan.

The USPTO's Top Ten List

When the regulatory review process first was announced, I was hopeful that the USPTO might seize the opportunity to alleviate some of the administrative burdens associated with Information Disclosure Statements. As I read through the Preliminary Plan, I was disappointed to see that 37 CFR § 1.98 did not make the USPTO's top ten list. Here's what did:

  1. 37 CFR § 1.52 (“Language, paper, writing, margins, compact disc specifications”)
  2. 37 CFR § 1.78 (“Claiming benefit of earlier filing date and cross-references to other applications”)
  3. 37 CFR § 1.121 (“Manner of making amendments in applications”)
  4. 37 CFR § 1.53 (“Application number, filing date, and completion of application”)
  5. 37 CFR § 1.704 (“Reduction of period of adjustment of patent term”)
  6. 37 CFR § 1.75 (“Claim(s)”)
  7. 37 CFR § 1.114 (“Request for continued examination”)
  8. 37 CFR § 1.321 (“Statutory disclaimers, including terminal disclaimers”)
  9. 37 CFR § 1.76 (“Application data sheet”)
  10. 37 CFR § 1.136 (“Extensions of time”)

I am underwhelmed by the this list, but given the selection criteria, it makes sense:

These ten candidate rules were selected because they have significant impact on the day-to-day operations of USPTO and the high volume of patent applications it processes. Even minor revisions that improve or simplify these rules could result in immediate, significant, and widespread benefits for patent applicants in their daily interactions with USPTO.

(Also, maybe these rules would be unaffected by Patent Reform . . . .)

It is interesting to see the Patent Term Adjustment (PTA) rule include in a list of rules that otherwise are largely procedural.

Is The USPTO Plan Responsive To Public Comments?

Included in the Preliminary Plan is a summary of the public comments the USPTO has reviewed to date. Because the USPTO did not respond to the comments, it is not clear whether they were taken into account when selecting the initial rules for review.

It is possible that aspects of the plan reflect some comments, such as:

  • That USPTO appoint an individual tasked with ensuring USPTO compliance with regulatory principles and administrative rules and procedures.

It would be interesting to know if the selected rules are associated with problems, or simply apply to a large percentage of applications. For example, did they arise from any of the following comments:

  • That USPTO consult its own personnel about inefficiencies or problems in regulations that could be corrected.
  • That USPTO conduct review of regulations in areas where there are a disproportionate number of applicant or USPTO procedural mistakes, which may be an indicator the regulations need improvement.
  • That USPTO give high priority to pendency issues in considering regulatory reform, and apply its resources in revising or developing new rules to those that will contribute most to a decrease in pendency, for example, reviewing rules concerning after-final practice and reexamination.

Clearly, this comment was not persuasive, or the IDS rules would be under consideration:

  • That USPTO seek to reduce the burden on patent and trademark applicants by eliminating requirements for them to provide information to USPTO that is already available elsewhere.

I have to point out the irony of this comment:

  • That USPTO seek to improve the extent and quality of its transparency and openness in a variety of ways, including in how it addresses public comments and in its other processes and with its data concerning applications.

The Federal Register Notice indicates that the Preliminary Plan is available at http://www.commerce.gov, but does not provide a full web address for the document. After poking around the Department of Commerce website and using its search function to no avail, I resorted to Google and found the plan at http://open.commerce.gov/news/2011/06/27/commerce-preliminary-plan-retrospective-analysis-existing-rules. Even the USPTO's webpage for the plan does not provide a link to the plan!

In case you missed it, here is a link to the Department of Commerce Preliminary Plan For Retrospective Analysis of Existing Rules, which includes the USPTO's plan.